Societe Jas Hennessy & Co v Louis Royer SA

[2006] ATMO 42

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Société Jas Hennessy & Co to registration of trade mark application 876681(33) - PARAISO - filed in the name of Louis Royer SA.

Delegate:	Jock McDonagh
Representation:	Opponent: Written submissions only Applicant: John Gibbs of Phillips Ormonde Fitzpatrick, Attorneys
Decision:	Section 52 opposition - grounds under sections, 44, 58 & 60 not established – registration allowed.  Costs awarded against the opponent.

Background

1. The applicant, Louis Royer SA, applied to register the following trade mark:

Application Number:	876681
Priority date:	22 May 2001
Goods:	Class  33:  Lychee liqueur
Trade Mark:	paraiso
Advertised:	13 December 2001

1. The opponent, Société Jas Hennessy & Co, filed notice of opposition to the trade mark's registration on 12 March 2002.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. Evidence in support, evidence in answer and evidence in reply was duly served and filed according the Act and regulations thereto.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Melbourne on 19 February 2006. The opponent was not represented at the hearing and relied on written submissions. Mr John Gibbs of Phillips Ormonde Fitzpatrick, Attorneys, represented the applicant.

   Evidence

4. The evidence relating to this opposition consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Jonathan Coles	10.12.2002	JC-1	Coles
Yann Fillioux	Undated Filed	XY-1 & XY-2	Fillioux
Michelle L Wilson	22.01.2003	MLW-1 & MLW-2	Wilson
Evidence in Answer
David Bertram Fitzpatrick	12.05.2004	DBF-1 to DBF-7	Bertram
Jean-Pierre Dematteo	22.12.2004	1 to 9	Dematteo
Kristine Helen Baird	31.12.2004	KHB-1 to KHB-22	Baird
Evidence in Reply
Tymen J Brom	11.07.2005	TJB-1 to TJB-7	First Brom
Tymen Jacob Brom	11.10.2005	TJB2-1 to TJB2-30	Second Brom

1. The evidence in support is provided by the Australian brand manager of the opponent (Coles), the master blender of the opponent (Fillioux), and an attorney of the opponent’s trade marks attorney firm (Wilson).

2. The Coles declaration details the history and reputation of the opponent’s Australian trade mark 350211 paradis, and the goods to which it is applied, a premium cognac, which retails in Australia for about $325 per 700 ml bottle.  The following tasting notes appear in exhibit JC-1:

   A veritable fireworks display of spices and peppery notes, softened by the fragrant scent of flowers. Finesse and elegance are the major characteristics. Perfectly harmonious in the mouth, Paradis reveals itself to be smooth, full-bodied and long lasting on the palate. Its force and finesse give it a perfect balance.

3. The opponent’s trade mark is registered in Australia.  The details are:

   Reg Number  350211
   Priority date:  27 August 1980

   GoodsClass: 33 Alcohols and brandy, liqueurs, spirits and aperitifs

   Trade Mark:  PARADIS

   Grounds of Opposition

4. The only grounds of opposition relied upon by the opponent were those pursuant to sections 44, 58 and 60 of the Act. I formally dismiss the remaining grounds.

   Section 44: Identical etc. trade marks

5. Section 44 of the Act relevantly provides:

   44  Identical etc. trade marks

   (1)       Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)       the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)        a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)       a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)       the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar goods see subsection 14(1).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

6. In considering whether marks are ‘substantially identical’ they are to be:

   ‘compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from that comparison’

   Shell Company (Aust) Limited v ESSO Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415.

7. Applying this test I find that the applicant’s trade mark is not substantially identical to any of the opponent’s mark. Apart from the common prefix, the words are quite dissimilar.

8. The expression ‘deceptively similar’ is defined within section 10 of the Act which provides:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

9. The expression ‘similar goods’, above, is defined within subsection 14(1) of the Act which provides:

   14  Definition of similar goods and similar services

   (1)       For the purposes of this Act, goods are similar to other goods:

   (a)       if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

10. In Registrar of Trade Marks v Woolworths [1999] FCA 1020 French J, with Tamberlin J agreeing, said at paragraph 39:

    Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as "closely related goods" in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

11. As the question of deceptive similarity is to be assessed in the context of the goods or services in question[1], it is logical to first consider the question whether the goods of the parties are similar.

    [1] Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777

12. It is important to stress here that what I am assessing is not any similarity between ‘lychee liqueur’ and ‘brandy’.  The application seeks registration in respect of ‘lychee liqueur’ and the specification of the opponent’s registration is, ‘Alcohols and brandy, liqueurs, spirits and aperitifs’ and I must suppose that both parties use or intend to use their trade marks to the limits of their specifications. 

13. ‘Lychee liqueurs’ are substantially goods of the same description as ‘liqueurs’. The goods of the parties are therefore similar goods.

14. As regards ‘deceptive similarity’, in Registrar of Trade Marks v Woolworths (above) at paragraph 50, French J, with Tamberlin J agreeing, made the following propositions:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Co Inc (1973) 129 CLR 353 at 362:

    "the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

15. As far as the comparison of the trade marks is concerned, Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641 at page 658 say:

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

16. And as if have alluded to above, the comparison is to occur in the context of the goods in terms of Parker J’s statement in Pianotist, above, where he said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

17. Adverting again to the goods, I would re-stress that I am bound to consider the effects of the concurrent use of the trade marks if ‘notionally’ used to the limits of both the opponent’s and applicant’s goods: Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8 and see Berlei, above.  I am not, therefore, comparing the trade marks in the context of the actual use of the opponent’s trade mark in relation to ‘brandy’ and the applicant’s use on ‘lychee liqueur’.  What I am to consider is the likely effects of both parties’ use of their trade marks on all of the goods within their specifications.

18. The word PARAISO is the dominant feature of the applicant’s trade mark.  It is the word by which the trade mark will be known, remembered and ordered.  The word is Spanish for “paradise” and apparently pronounced “para-iss-o” in that language.  However, it could also be pronounced “pa-rye-so” or “par-eye-so” by persons not familiar with the Spanish language.  Persons unfamiliar with the Spanish language are also unlikely to be aware that PARAISO means “paradise”.  The emphasis in pronunciation is likely to be on the second syllable in the case of non-Spanish pronunciation.

19. The opponent’s trade mark PARADIS, will, I consider, be seen as essentially the same as, and is, to all intents, phonetically indistinguishable from the word PARADISE.  While Francophones and persons familiar with French would pronounce the word “para-dee”, it is quite possible that a respectable proportion of Australians might render it “para-diss”.  The emphasis in pronunciation is likely to be on the “para” initial syllable.

20. While the two trade marks share the same prefix, “para”, and the same number of letters, I do not consider that they have an overall impression of similarity.

21. I am not satisfied that the words comprising the opposing trade marks would make it likely that consumers would associate the two marks with the same source.

22. Therefore, I am not satisfied that the opponent has satisfied the onus of establishing this ground of opposition and I dismiss it.

    Section 58: Applicant not owner of the trade mark

23. Section 58 provides:

    58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

24. It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:

    (i) that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);

    (ii) that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and

    (iii) that the opponent has the earlier claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).

25. I have already determined that the respective trade marks are neither identical nor substantially identical. Therefore, I am not satisfied that the opponent has satisfied the onus of establishing this ground of opposition and I dismiss it.

    Section 60 - Prior Reputation

26. To satisfy section 60, the opponent has the burden of establishing the following elements:

    ¨   a pre-existing trade mark;

    ¨   substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark;

    ¨   the acquisition of a reputation in Australia by the pre-existing trade mark; and

    ¨   a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

27. I am satisfied that the opponent’s trade mark was being used in Australia before the priority date. This was established under the section 44 ground.

28. I have already determined that the respective trade marks are neither substantially identical nor deceptively similar. Therefore, I am not satisfied that the opponent has satisfied the onus of establishing this ground of opposition and I dismiss it.

    Conclusion

29. The opponent has not made out any of its grounds of opposition, thus the opposition fails.

30. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

31. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

32. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    26 May 2006